The USPTO recently suggested changes which would force foreign trade mark applicants to engage a US-based attorney, in a bid to limit inaccurate and fraudulent applications by self-filers. The proposed changes, published by means of a Notice of Invention on 15 February 2019, will affect foreign applicants who would otherwise be permitted to file trade marks directly with the USPTO without engaging an authorized US attorney.
The NPR Summary reads: America Patent and Trademark Office (USPTO or Office) proposes to amend the Rules of Practice in Trademark Cases as well as the rules regarding Representation of Others Before the usa Patent and Trademark Office to require applicants, registrants, or parties to your proceeding whose domicile or principal place of work will not be located within the usa (U.S.) or its territories (hereafter foreign applicants, registrants, or parties) to get represented by legal counsel who may be an active member in good standing in the bar from the highest court of a state within the U.S. (including the District of Columbia as well as any Commonwealth or territory in the U.S.). A requirement that such foreign applicants, registrants, or parties be represented by way of a qualified U.S. attorney will instill greater confidence in the public that U.S. registrations that issue to foreign applicants are not subject to invalidation for reasons like improper signatures and use claims and allow the USPTO to better use available mechanisms to enforce foreign applicant compliance with statutory and regulatory requirements in trademark matters.
At Michael Buck IP, we already work closely with numerous licensed US attorneys who will still aid in expanding protection of our own client’s trade marks into america. No changes to these arrangements is going to be necessary and we remain offered to facilitate US trade mark applications on behalf of our local clients.
United States Of America designations filed through the Madrid protocol will fall within the proposed new requirements. However, it is actually anticipated that the USPTO will review procedures for designations which proceed to acceptance at the first instance so that a US Attorney need not be appointed in this situation. Office Actions must be responded to by How To Start An Invention. This transformation will affect self-filers into the United States – our current practice of engaging a US Attorney to respond to Office Actions on behalf of our local clients will not change.
A huge change is placed ahead into force for Australian trade mark owners, who, from 25 February 2019, will not be able to rely on the commencement of infringement proceedings as being a defence to groundless threats. Currently, a trade mark owner who commenced infringement proceedings against another party was exempt from a cross-claim of groundless or unjustified threats. However, this may soon not be possible.
This amendment towards the Trade Marks Act will bring consistency across the Australian Patents Act, Designs Act, Plant Breeder’s Rights Act and also the Trade Mark Act, which up to now, was the only act to enable this defence. We expect that the removing of this section of the Trade Marks Act allows the “unjustified threats” provisions in the Trade Marks Act to get interpreted just like the Patents Act. Thus, we believe it is likely that in the event infringement proceedings are brought against a celebration afhbnt is ultimately found never to be infringing or the trade mark is found to be invalid, the trade mark owner is going to be deemed to get made unjustified or groundless threats.
Additionally, a new provision will be included in the Patents Act, Designs Act, Trade Marks Act and Plant Breeder’s Rights Act affording the court the power to award additional damages in case one is deemed to possess made unjustified threats of proceedings for infringement. The legal court will consider numerous factors, like the conduct from the trade mark owner after making the threat, any benefit derived through the What To Do With An Invention Idea through the threat and the flagrancy in the threat, in deciding whether additional damages should be awarded against the trade mark owner.